Well, the production system is such that you have a goal which is derived from a Nominal "Hours per balanced disposal" for the "art" you are assigned. this "goal" is then factored by your grade and level of responsibility (plus, some extra creit factors for a few" The Balanced disposal" is simply (N + D)/2 Where N = the number new first actions done (Some preliminary things like restriction only don't count) And D = The number of disposals, which are allowances, abandonments, and Examiner's Answers on Appeal. Every application is, thus 2 "counters". To calculate production
You take the examining hours for the period being considered (BiWeek, Quarter, Fiscal Year) Which is all time you can't write off for other things (like leave, and various "non-examining time" activities you can eke out) and divide by your balanced disposals to get your actual Hours per balanced disposal. Then You divide this by your "goal". multiply by 1000 to yield your percent achievment. Over the last 4 quarters, of your Achievment falls between 90 and 95% youare rated "Marginal" and have one quarter to avoid a written warning. Less than 90% is unsatisfactory; you get a written warning and have 90 days to get at or above 95% for the year; if not, then "Adverse action" is taken, which is ALWAYS being fired.
So, if you have a new application and you issue it, you get two counters (It is both new and Disposal) with little time to charge; If you really fight a case, even writing extra rejections because you find better prior art,thake the case to appeal, the appicant appeals the PTO's board to the courts, and it comes back you still got only the two counts, one when you make the first action, the second when you send it to the Appeals Board, and thats it. You eat all the hours. Or, perhaps, you just say "The Hell with it; I'll let the applicant make a nominal amendment not really limiting the claims you previously rejected, and just allow it.
Given the fact that, for a Journeyman Primary examiner (GS-14, Full Signatory Authority)your time percase must average perhaps 10-12 hours for ALL the work on the case from searching, writting the office action, analyzing responses and all kinds of nitpicking bullshit that are clerical in nature, what do you think happens to the case? where you can't find just the refernce you need to make the case?
Well, The RE in the patent number means that this is a "reissue" patent. A reissue is granted to correct "a mistake" in the original patent it is based on. The reissue cannot add "new matter" (i. e., material not disclosed in the original patent specification, and the reissue filer must prove that there was no fraudulent intent involved. The claims may be narrowed or broadened, but if broadened, the reissue must be filed within two years of the issue date of the original patent.
Changes in the reissue patent are shown with text removed enclosed in brackets [] and added text in italics (Underlined in the manuscript)
The PTO is finding it difficult to retain Examiners. The management recently proposed a 10-15% pay increase in exchange for , among other things, eliminating all the paper files. This proposal was rejected by over 80% of examiners polled, recently.
For a discussion of this and other issues from the Patent Examiner's point of view look at the POPA Website.
BTW, I am not sure of the current statistics, but to reach 100% of their quota an examiner is allocated, on average, about 15 hours (the eactual figure depends on Grade and "Art"; Computers and Bioptecch get more, buggy whips less) to examine an application, from start to finish
IT might be helpful to the PTO if people who are regularly assigned to process the prior art I f thy could figgure out where the prior art in a given document would be useful and send them directly to the Art Unit or, if known, examiner in charge, so they can go directly to where the can be of most use.
The SIRs have one feature that a simple publication doesn't..they can be a party to an interference (to determine priority of invention) and can actually be effective in that context prior to the filing date. SIRs were intended to be used by US Government agencies that wanted a defensive mechanism to avoid having work that was developed by the Government tied up by a the patent of another, but anyone can apply for a SIR. It is very expensive, but if the stakes are High, then it might be useful
OK, I'm violating my moderator status by replying, but I just have to jump in
Yes, a patent applicant/owner can "swear behind" prior art that is less than one year prior to the effective filing date, but he must show evidence of conception of the invention and dilligence to reduce it to practice PRIOR to the publication date of the reference. Obviously, this can be faked, but that is fraud, and could,more than invalidate the patent and subject the one commiting the fraud to criminal remedies. Apublication that is more than one year prior to the effective filing date is a "statutory bar", which cannot be "sworn behind"
Hahahhahahahaha....The PTO used just such a system (PALM III) that started in the mid-late 70's, Burroughs 6700, lots of Dumb Terminals and barcode scanners. It's primary initial use was...keeping track of the Patent Application File wrappers.
Well,NSA and DOD get a crack at determining if a Patent Application has "Classified" material. If it is, they require the issuing of a secrecy order. The application is forwared to a special security group (used to be Group 220, don't know what they are called now) that had extra security in place...even Examiners from outside Group 220 had to sign in and out when visiting the secure area of the group.
The application can be prosecuted to allowance, but then could not be issued until the secrecy order was rescinded by the agency/department that ordered the original order.
i don't think that the agency, as a matter of policy, could confiscate the invention, or force an assignment of it, at least without compensation to the original owner.
secrecy orders are supposed to be reviewed periodically, but, as a practical matter, "National Security" almost always prevails. Of course, in many cases, the invention, if it had any value when it was filed, is probably worthless after such a long time; not sure if you could take the Govt to the Claims Court to be compensated.
Exactly!! Just adds another level of Irony to Katz's Populist inspired ranting. So the self hating American cozies up the apparent Frenchman who actually exhibits good ol' 'merican Berkley inspired "action".
The concept of raising the fees paid by applicants to cover the costs of the PTO go back to Reagan's Commissioner, Gerald Mossinghoff. The goal was to cover all the costs of Patent operations (Trademarks were handled separately) with the exception of a reduction of some fees for "small entities" (e. g., independent inventors, small businesses, non-profits) which would continue to be supported by Congressional appropriations (not sure if this is technically correct in budgeteeese as Congress approves the entire budget; just looking at the balance between fees and expenditures). In addition to to raising the basic fees that had previously existed, new fees, like patent maintenance fees, were added.
This apparently, has worked well; so well, that Congress is trying to use the fee revenue stream to support other government programs. It's kind of like all the special taxes that are placed on telepone service in the US to support all kinds of things, or gas taxes used to support mass transit, etc.
Like you say this is typical Washington whoring (not that PTO management is innocent in many other ways)
While it is true that PTO management has encouraged production at the expense of quality for over two decades, the question of the patentablility of software methods and business methods has been determined by the courts, not the PTO. Both of these, traditionally, were held by the PTO to be non-patentable subject matter (35 USC 101) for many years. Indeed, the PTO fought the patentablility of a method and means for converting BCD to binary (and/or vice-versa) all the way to the Supreme Court, and won (the Benson case). The supremes reversed the lower court (then the Court of Customs and Patent Appeals, succeeded by the Court of Appeals for the Federal Circuit). The CCPA, thereafter, sought to nitpick Benson to death, eventually leading to it's virtual devistation.
The Methods of doing business were overturned sometime in the 80's When One of the big financial companies got the CCPA/CAFC to overturn a rejection of some financial product.
The point of this is to make clear that it is the courts, not the PTO, that determines the the interpretation of section 101, as to patentable subject matter. This is not a constitutional determination; Congress has the power to change this (good Luck).
Given this, the Office has no choice but to continue the examination of the the application to see if it meets other requirements, most notably novelty and unobviousness, of which there is plenty so say, since that is squarely within the PTO's rhelm, and which much has been vigorously commented on/. . But laying the blame for the concept that software and business methods on the shoulders of the PTO is clearly wrong.
Sorry; no dice; In this case, the Primary Examiner IS very likely the Assistenat examiner's Boss (SPE); In any event, if the AE's production is >= 110% he/she will get an award; if the AE fought the applicant and won, but his production went 90% he would be put out on the street.
Just as long as it's not a means and method to convert BCD to binary...the Patent Office opposed patenting such "alorithms", took it all the way to the US Supreme Court, and won!(the Benson case).
"What!!??" you say, the Patent Office actually opposing a "computer" patent? Yes! The date of the Benson decision is 1972; The lower appeals court (then the CCPA, later merged into the present Court of Appeals for the Federal Circuit) proceeded to chip away at Benson, until it was, in effect, reversed, at, as good as reversed.
How times have changed. (The same went for methods of operating a business, which had been previously held to be not patentable subject matter)
Not necessarily. If doubleclick started publicly using the technique more than a year before the filing date then that IS a "statutory bar" against the patent claim; If it is less, then cNet MIGHT be able to "swear behind" the earliest date DoubleClick could establish by proving they had reduced the invention to practice prior to DoublClick's date.
I will not even comment about Obviousness, proper subject matter for patenting, whether intellectual property is EVER good, etc.
Not only the M$ requirment for state software; how about this state run Portal site, to be built with M$ help? The Ridge Administration has its head well up Bill's butt...They must love the smell.
I know one employee of a State agency who recently grabbed a "surplus" computer for use in his office. He promptly wiped Windows and put on Linux. Oh, yeah, He's the leader of the small, local Linux Sig. What a coincidence.
The ILOVEYOU work hit my computer at work (a private company near Philly; all 100% M$ (Gotta eat) as I was just loging onto Floutlook. After about 15 mins the sysadmins paged the company not to open them and severed our external mail connection for most of the day.
Thanks for the clue about post formatting. I am an infrequnet contributor, and I missed the drop down box.
Sorry about the confusion about "anticipation". This term simply says that a sincle reference (alternate term for "prior art", typically shown in a "printed" publication) EXACTLY shows the claimed invention. The whole concept of obviousness originated as judge made case law to bar patentees from making a minor, insignificant change to the claims that would avoid the strict showing of the prior art yet remain still very broad. The idea of the patentee was to then sue everyone for infringement except for the very narrow thing exactly shown in the prior art reference. This was eventually put into the patent statutes, today embodied by section 103.
The comment I made applies in the case where the examiner rejected a claim under 103 for obviousness and not under section 102 for anticipation; the applicant/or patentee then argues that the reference anticipates the claim, so the rejection under 103 is not proper; thus, there is no valid rejection of the claim to appeal. Not a very promising future for this claim, but, if upheld, there could be more proceedings, more chances to make mischief, etc.
Well, the court who decided this said, in effect, no way! A claim which is actually anticipated for prior art under 102 is inherently rejectable under section 103 over the same prior art for obviousness. It's kind of like saying if you hit the bullseye, you've also hit the target.
These kinds of situation can occur if there are minor but possible interpretations of what a reference is showing or what the meanings of the words in the claim are. It is safer for an examiner to use the broader obviouness rejection, but it is also not improper (ah, legal double negatives!) to make BOTH rejections as long as the ambiguities are addressed.
Anticipation is usually rather stark; generally no fudge factors like with obviusness whree you have to argue the differences (see my reply to the other replyer to my post for my obsevations about current PTO quality)
Hey, take it easy on the Jolt! Calm down.... there, that's better.
I was not attacking your take on the validity of the Amazon "one-click" patent, just trying to clarify some blatent misapprehension of patent law. Without a clear understanding of the patent law arguments based on the resulting misunderstanding lose a lot of their effectiveness, even if, with the proper application of law, might reach the exact same conclusion. I have not expressed any personal conclusion of the validity of Amazon, nor does anything 9n patent law DEMAND that its validity is ultimately assured. Yes, there is a presumption of validity of the patent, but presuptions are rebuttable.
If I were to review Amazon, as with any patant, I would want to see the entire "file wrapper" and all other prior art, plus any "evidence" of those skilled in the art at the time the invention was made. I emphasize, again, I haven't done this for Amazon, and I have no plans to get into this since it is likely that lots of others have done this. All I am trying to express, here, is the process one uses to make the decision.
OF course, then, the decision, itself, is then the key. Again, without expressing any opinion about this particular patent, I have serious doubts about the quality, in general, of PTO substantive decisions. In my previous post I described the PTO in hardly flattering terms. When I joined the PTO in 1973 there was a core, still, of bright, dedicated examiners who were really interested in getting to the truth and were not shy about resisting crap from being issued. The legal environment was not as "legalistic" as it has become, in the sense that an examiner could use an expression like "any kid on the street knows that" to support an obviousness rejection, and therre was a good likelyhood that, on appeal, that reasoning woould be supported. However, two factors changed this. Firstly, the courts reviewing most appeals from the PTO, First the Court of Customs and Patent Appeals, now superceded by the Court of Appeal for the Federal Circuit, started enforcing a more legalistic process in writting office actions, requiring a stricter standard for showing, in an obviusness rejection, not just a showing of the various parts of the invention in the reference(s), but how the REFERENCES, and the NOT the examiner, would "suggest" the claimed invention. This, then, had the effect of requiring more analysis to justify rejections. The only effect this could have of years of prior accepted practice, I maintain, is fewer reasons to reject claims, on average. Since examiners can't persue reversals made by the PTO's Board of Appeals and Patent Interferences the application gets issued.
The second infuence, and, by far, the most destructive, was an ill informed, and, even hostile, management who clearly chose bean counting over quality, so that they could crow to Congress "We processed over 100,000 applicatins last fiscal year! We cut average application pendency (time from filing to issue/abandonment) to 22 months! Ain't we great?!" Almost all of this volume was taken out of the examination process; making your numbers took precidence over quality; Almost all examiners who got into performance problems were based on production or timeliness violations, not quality.
That old core of dedicated examiners just dwindled away; those that could retire did so at the first opportunity; other just had to "get with the program", newly hired examiners were thoroghly indoctinated into the prevailing bean counter mentality. Applications are processed, although the process is still called "examination".
I keep in contact with a colleage who came in a few years after I did; He sort of had a foot in both camps, but now even he is appalled at how the "kids" comming in nowadays are doing the work. He reviews the work of juniors and is distressed at how they allow claims that are as blatently rejectable as the One-Cl^H^H^H^H^H^H^H^H^H^H Hell.
But, yet again, I still offer no opinion as to Amazon.
I am late to the discussion here and some of what I will say has been addressed by prior replies to this post, but I just can't resist adding my 2 cents (US), particularly since the moderator saw fit to award this post so richly. As background, I am a former Patent Examiner with 18 years in the PTO, although I no longer have anything to do with the IP field. The poster states: "Dickenson doesn't understand the difference between 'obvious' and 'prior art'. If there is prior art, it doesn't matter if it's obvious. Obvious is for the case where there is no prior art." This is totally WRONG; The statutory standard for obviousness is set forth in 35 USC 103, where the term "Prior Art" appears, the gist of which states: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.... Perhaps ther poster simply didn't understand the use of terminology in patent law, but the implied notion that "obviousness" is done in a vacuum without reference to prior art is totally bogus; the Commissioner is quite correct in stating that obvious needs to be supported by prior art; By prior art it is not limited to a single piece of prior art that identially shows the claimed invention; that circumstance is called anticipation, whcih is covered in section 102 of the patent statute; If the invention is anticipated, it is also (but redundantly) obvious, for anticipation is the epitome of obviousness. (That comes from some court opinion I won't bother to waste time looking up); section 103 simply extends the prohibition of patenting an invention not exactly previously known to the case where it is an "obvious" variant. But, how much variation is needed to escape section 103? That's the money shot of the patent biz (Well, after the definition of proper subject matter under section 101, perhaps). That staute only gives some broad guidelines: On is to look at the differences between the claimed invention and the prior art (Which can be one or more individual pieces of prior art), and then evaluate what the prior art shows (or "teaches" as it is sometimes expressed), taking the view of one "skilled in the art" to which the invention pertains. As a practical matter, the art of the prior art references will generally be the same as the claimed invention; it then boils down to evaluating the significance of the differences. There is no hard and fast rule here, but it amounts to how significantly, in one or more functional aspects, the claimed invention "works" compared to the functionality exhibited by the prior art. So, what Dickenson said is, on its face, perfectly correct: If you think the invention is obvious, prove it, according to law, by providing the prior art AND arguing how that prior art applies against the claim. Now, in all this I am not stating that the searches and decisions on patents by the PTO are perfect, in any way; in fact, as I have indicated in my few past posts on patents, the PTO has serious management deficiencies in the way patents are examined, that have their roots back in the 1960's and have only gotten worse over the years to a deplorable state. But silly, uninformed attacks like this post that are so EASILY rebuttable do liitle to advance the debate on this subject. And the moderator who bumped this up to 5 (without a "funny" reason) needs to get a clue; the post was really not worth much more than a run of the mill AC 0.
Unfortunately, this will not improve soon. I keep in touch with a former colleague at the PTO and he tells me how truly sad thigs have become (He doesn't work on software patents). Over the last 30 years, PTO management has emphasised production and meeting timeliness deadlines over quality; after all, the former can be quantified, but quality can be subjective (you have to go to the heart of the matter to really evaluate quality vs. any dumb beanco^H^H^H^H^H^H^H^H^H^H^H manager probably has the mental ability to look at % of expectency, Number of amended applications over two months not acted on, etc. Years ago, the top managers claimed that their push to get more work out more quickly would be accompanied by an INCREASE in quality, yet, years later, a former high official was forced to retreat from this claim, stating that quality had not increased. Nevertheless, management pushed on, ratcheting up the requirement to increase production to even higher levels. The operative word" TAKE LESS TIME ON CASES. The managers then used another approach to "encourage" an allowance over a rejection. It was tracitional for examiners to use a shorthand in making rejections; the presuption was that everyone incvolved in the application process was technically skilled and could understand how The multiple references were being applied in an obviousness rejection (35 USC 103). This, of course, could be abused by the examiner in some cases, but generally had been satisfactorily used for decades. The Patent Bar, however raised a big stink over it, saying the quality of actions were not enough to legally establish a Prima Face case of Obviousness, which is required since the PTO has the burden to prove it ("A person shall be entitled to a patent unless..."). The net result was more, verbose office actions. With no real improvements in helping to meet this added burden (Well, after years of hand writing office actions on yellow legal pads to be submitted to a typing pool, Examiners FINALLY got NT PC's to work on; this did not exist in 1991 when I left the PTO) and with less and less time to allocate to searching and analyzing prior art there was a disincentive to really goint the level of detail required to meet this new requirement. The net of all these factors: Fewer rejections on substantive grounds, more allowances, an increasing number of them on the first action, fewer appeals, happy managers pointing out how much "work" had been accomplished, happier applicants geting broader claims then they used to, and happy examiner, at lest the ones who got awards and ouststanding ratings for high production, now renamed "Quality". My friend told me of a recent briefing by a high lever manager who had just returned from a conference at an industry group, who transmitted the message "We want our patents fast, so don't waste time with searching and beeing a bulldog on broad claims let the courts take care of the dirty details of patentablity" This mindset will only changed by appointment of a reformist Commissioner willing to clean house and lay down the law; the probability of this, give the current political climate, is unfortunately zero.
1. "The PTO is not yet equipped to handle general email correspondence. General inquiries should be directed by telephone to 800.786.9199 (800.PTO.9199) or 703.308.4357 (703.308.HELP), or in writing to one of the addresses specified in the PTO Directory." 2. Congress (good luck, have plenty of $$$$$'s ready to hand out.)
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Well, the production system is such that you have a goal which is derived from a Nominal "Hours per balanced disposal" for the "art" you are assigned. this "goal" is then factored by your grade and level of responsibility (plus, some extra creit factors for a few" The Balanced disposal" is simply (N + D)/2 Where N = the number new first actions done (Some preliminary things like restriction only don't count) And D = The number of disposals, which are allowances, abandonments, and Examiner's Answers on Appeal. Every application is, thus 2 "counters". To calculate production
You take the examining hours for the period being considered (BiWeek, Quarter, Fiscal Year) Which is all time you can't write off for other things (like leave, and various "non-examining time" activities you can eke out) and divide by your balanced disposals to get your actual Hours per balanced disposal. Then You divide this by your "goal". multiply by 1000 to yield your percent achievment. Over the last 4 quarters, of your Achievment falls between 90 and 95% youare rated "Marginal" and have one quarter to avoid a written warning. Less than 90% is unsatisfactory; you get a written warning and have 90 days to get at or above 95% for the year; if not, then "Adverse action" is taken, which is ALWAYS being fired.
So, if you have a new application and you issue it, you get two counters (It is both new and Disposal) with little time to charge; If you really fight a case, even writing extra rejections because you find better prior art,thake the case to appeal, the appicant appeals the PTO's board to the courts, and it comes back you still got only the two counts, one when you make the first action, the second when you send it to the Appeals Board, and thats it. You eat all the hours. Or, perhaps, you just say "The Hell with it; I'll let the applicant make a nominal amendment not really limiting the claims you previously rejected, and just allow it.
Given the fact that, for a Journeyman Primary examiner (GS-14, Full Signatory Authority)your time percase must average perhaps 10-12 hours for ALL the work on the case from searching, writting the office action, analyzing responses and all kinds of nitpicking bullshit that are clerical in nature, what do you think happens to the case? where you can't find just the refernce you need to make the case?
Uhhhh, do former Patent Examiners count?
Well, The RE in the patent number means that this is a "reissue" patent. A reissue is granted to correct "a mistake" in the original patent it is based on. The reissue cannot add "new matter" (i. e., material not disclosed in the original patent specification, and the reissue filer must prove that there was no fraudulent intent involved. The claims may be narrowed or broadened, but if broadened, the reissue must be filed within two years of the issue date of the original patent.
Changes in the reissue patent are shown with text removed enclosed in brackets [] and added text in italics (Underlined in the manuscript)
The PTO is finding it difficult to retain Examiners. The management recently proposed a 10-15% pay increase in exchange for , among other things, eliminating all the paper files. This proposal was rejected by over 80% of examiners polled, recently. For a discussion of this and other issues from the Patent Examiner's point of view look at the POPA Website. BTW, I am not sure of the current statistics, but to reach 100% of their quota an examiner is allocated, on average, about 15 hours (the eactual figure depends on Grade and "Art"; Computers and Bioptecch get more, buggy whips less) to examine an application, from start to finish
IT might be helpful to the PTO if people who are regularly assigned to process the prior art I f thy could figgure out where the prior art in a given document would be useful and send them directly to the Art Unit or, if known, examiner in charge, so they can go directly to where the can be of most use.
The SIRs have one feature that a simple publication doesn't..they can be a party to an interference (to determine priority of invention) and can actually be effective in that context prior to the filing date. SIRs were intended to be used by US Government agencies that wanted a defensive mechanism to avoid having work that was developed by the Government tied up by a the patent of another, but anyone can apply for a SIR. It is very expensive, but if the stakes are High, then it might be useful
OK, I'm violating my moderator status by replying, but I just have to jump in ,more than invalidate the patent and subject the one commiting the fraud to criminal remedies. Apublication that is more than one year prior to the effective filing date is a "statutory bar", which cannot be "sworn behind"
Yes, a patent applicant/owner can "swear behind" prior art that is less than one year prior to the effective filing date, but he must show evidence of conception of the invention and dilligence to reduce it to practice PRIOR to the publication date of the reference. Obviously, this can be faked, but that is fraud, and could
Hahahhahahahaha....The PTO used just such a system (PALM III) that started in the mid-late 70's, Burroughs 6700, lots of Dumb Terminals and barcode scanners. It's primary initial use was...keeping track of the Patent Application File wrappers.
Well,NSA and DOD get a crack at determining if a Patent Application has "Classified" material. If it is, they require the issuing of a secrecy order. The application is forwared to a special security group (used to be Group 220, don't know what they are called now) that had extra security in place...even Examiners from outside Group 220 had to sign in and out when visiting the secure area of the group.
The application can be prosecuted to allowance, but then could not be issued until the secrecy order was rescinded by the agency/department that ordered the original order.
i don't think that the agency, as a matter of policy, could confiscate the invention, or force an assignment of it, at least without compensation to the original owner.
secrecy orders are supposed to be reviewed periodically, but, as a practical matter, "National Security" almost always prevails. Of course, in many cases, the invention, if it had any value when it was filed, is probably worthless after such a long time; not sure if you could take the Govt to the Claims Court to be compensated.
...and insert a one click order the product link...oh, wait, that innovation has already been done....never mind....
Arbeit Macht Frei, 21st Century version
Exactly!! Just adds another level of Irony to Katz's Populist inspired ranting. So the self hating American cozies up the apparent Frenchman who actually exhibits good ol' 'merican Berkley inspired "action".
Quel iron!
The concept of raising the fees paid by applicants to cover the costs of the PTO go back to Reagan's Commissioner, Gerald Mossinghoff. The goal was to cover all the costs of Patent operations (Trademarks were handled separately) with the exception of a reduction of some fees for "small entities" (e. g., independent inventors, small businesses, non-profits) which would continue to be supported by Congressional appropriations (not sure if this is technically correct in budgeteeese as Congress approves the entire budget; just looking at the balance between fees and expenditures). In addition to to raising the basic fees that had previously existed, new fees, like patent maintenance fees, were added.
This apparently, has worked well; so well, that Congress is trying to use the fee revenue stream to support other government programs. It's kind of like all the special taxes that are placed on telepone service in the US to support all kinds of things, or gas taxes used to support mass transit, etc.
Like you say this is typical Washington whoring (not that PTO management is innocent in many other ways)
While it is true that PTO management has encouraged production at the expense of quality for over two decades, the question of the patentablility of software methods and business methods has been determined by the courts, not the PTO. Both of these, traditionally, were held by the PTO to be non-patentable subject matter (35 USC 101) for many years. Indeed, the PTO fought the patentablility of a method and means for converting BCD to binary (and/or vice-versa) all the way to the Supreme Court, and won (the Benson case). The supremes reversed the lower court (then the Court of Customs and Patent Appeals, succeeded by the Court of Appeals for the Federal Circuit). The CCPA, thereafter, sought to nitpick Benson to death, eventually leading to it's virtual devistation.
/. . But laying the blame for the concept that software and business methods on the shoulders of the PTO is clearly wrong.
The Methods of doing business were overturned sometime in the 80's When One of the big financial companies got the CCPA/CAFC to overturn a rejection of some financial product.
The point of this is to make clear that it is the courts, not the PTO, that determines the the interpretation of section 101, as to patentable subject matter. This is not a constitutional determination; Congress has the power to change this (good Luck).
Given this, the Office has no choice but to continue the examination of the the application to see if it meets other requirements, most notably novelty and unobviousness, of which there is plenty so say, since that is squarely within the PTO's rhelm, and which much has been vigorously commented on
Sorry; no dice; In this case, the Primary Examiner IS very likely the Assistenat examiner's Boss (SPE); In any event, if the AE's production is >= 110% he/she will get an award; if the AE fought the applicant and won, but his production went 90% he would be put out on the street.
Just as long as it's not a means and method to convert BCD to binary...the Patent Office opposed patenting such "alorithms", took it all the way to the US Supreme Court, and won!(the Benson case).
"What!!??" you say, the Patent Office actually opposing a "computer" patent? Yes! The date of the Benson decision is 1972; The lower appeals court (then the CCPA, later merged into the present Court of Appeals for the Federal Circuit) proceeded to chip away at Benson, until it was, in effect, reversed, at, as good as reversed.
How times have changed. (The same went for methods of operating a business, which had been previously held to be not patentable subject matter)
Not necessarily. If doubleclick started publicly using the technique more than a year before the filing date then that IS a "statutory bar" against the patent claim; If it is less, then cNet MIGHT be able to "swear behind" the earliest date DoubleClick could establish by proving they had reduced the invention to practice prior to DoublClick's date.
I will not even comment about Obviousness, proper subject matter for patenting, whether intellectual property is EVER good, etc.
Not only the M$ requirment for state software; how about this state run Portal site, to be built with M$ help? The Ridge Administration has its head well up Bill's butt...They must love the smell.
I know one employee of a State agency who recently grabbed a "surplus" computer for use in his office. He promptly wiped Windows and put on Linux. Oh, yeah, He's the leader of the small, local Linux Sig. What a coincidence.
The ILOVEYOU work hit my computer at work (a private company near Philly; all 100% M$ (Gotta eat) as I was just loging onto Floutlook. After about 15 mins the sysadmins paged the company not to open them and severed our external mail connection for most of the day.
Thanks for the clue about post formatting. I am an infrequnet contributor, and I missed the drop down box.
Sorry about the confusion about "anticipation". This term simply says that a sincle reference (alternate term for "prior art", typically shown in a "printed" publication) EXACTLY shows the claimed invention. The whole concept of obviousness originated as judge made case law to bar patentees from making a minor, insignificant change to the claims that would avoid the strict showing of the prior art yet remain still very broad. The idea of the patentee was to then sue everyone for infringement except for the very narrow thing exactly shown in the prior art reference. This was eventually put into the patent statutes, today embodied by section 103.
The comment I made applies in the case where the examiner rejected a claim under 103 for obviousness and not under section 102 for anticipation; the applicant/or patentee then argues that the reference anticipates the claim, so the rejection under 103 is not proper; thus, there is no valid rejection of the claim to appeal. Not a very promising future for this claim, but, if upheld, there could be more proceedings, more chances to make mischief, etc.
Well, the court who decided this said, in effect, no way! A claim which is actually anticipated for prior art under 102 is inherently rejectable under section 103 over the same prior art for obviousness. It's kind of like saying if you hit the bullseye, you've also hit the target.
These kinds of situation can occur if there are minor but possible interpretations of what a reference is showing or what the meanings of the words in the claim are. It is safer for an examiner to use the broader obviouness rejection, but it is also not improper (ah, legal double negatives!) to make BOTH rejections as long as the ambiguities are addressed.
Anticipation is usually rather stark; generally no fudge factors like with obviusness whree you have to argue the differences (see my reply to the other replyer to my post for my obsevations about current PTO quality)
Hey, take it easy on the Jolt! Calm down.... there, that's better.
I was not attacking your take on the validity of the Amazon "one-click" patent, just trying to clarify some blatent misapprehension of patent law. Without a clear understanding of the patent law arguments based on the resulting misunderstanding lose a lot of their effectiveness, even if, with the proper application of law, might reach the exact same conclusion. I have not expressed any personal conclusion of the validity of Amazon, nor does anything 9n patent law DEMAND that its validity is ultimately assured. Yes, there is a presumption of validity of the patent, but presuptions are rebuttable.
If I were to review Amazon, as with any patant, I would want to see the entire "file wrapper" and all other prior art, plus any "evidence" of those skilled in the art at the time the invention was made. I emphasize, again, I haven't done this for Amazon, and I have no plans to get into this since it is likely that lots of others have done this. All I am trying to express, here, is the process one uses to make the decision.
OF course, then, the decision, itself, is then the key. Again, without expressing any opinion about this particular patent, I have serious doubts about the quality, in general, of PTO substantive decisions. In my previous post I described the PTO in hardly flattering terms. When I joined the PTO in 1973 there was a core, still, of bright, dedicated examiners who were really interested in getting to the truth and were not shy about resisting crap from being issued. The legal environment was not as "legalistic" as it has become, in the sense that an examiner could use an expression like "any kid on the street knows that" to support an obviousness rejection, and therre was a good likelyhood that, on appeal, that reasoning woould be supported. However, two factors changed this. Firstly, the courts reviewing most appeals from the PTO, First the Court of Customs and Patent Appeals, now superceded by the Court of Appeal for the Federal Circuit, started enforcing a more legalistic process in writting office actions, requiring a stricter standard for showing, in an obviusness rejection, not just a showing of the various parts of the invention in the reference(s), but how the REFERENCES, and the NOT the examiner, would "suggest" the claimed invention. This, then, had the effect of requiring more analysis to justify rejections. The only effect this could have of years of prior accepted practice, I maintain, is fewer reasons to reject claims, on average. Since examiners can't persue reversals made by the PTO's Board of Appeals and Patent Interferences the application gets issued.
The second infuence, and, by far, the most destructive, was an ill informed, and, even hostile, management who clearly chose bean counting over quality, so that they could crow to Congress "We processed over 100,000 applicatins last fiscal year! We cut average application pendency (time from filing to issue/abandonment) to 22 months! Ain't we great?!" Almost all of this volume was taken out of the examination process; making your numbers took precidence over quality; Almost all examiners who got into performance problems were based on production or timeliness violations, not quality.
That old core of dedicated examiners just dwindled away; those that could retire did so at the first opportunity; other just had to "get with the program", newly hired examiners were thoroghly indoctinated into the prevailing bean counter mentality. Applications are processed, although the process is still called "examination".
I keep in contact with a colleage who came in a few years after I did; He sort of had a foot in both camps, but now even he is appalled at how the "kids" comming in nowadays are doing the work. He reviews the work of juniors and is distressed at how they allow claims that are as blatently rejectable as the One-Cl^H^H^H^H^H^H^H^H^H^H Hell.
But, yet again, I still offer no opinion as to Amazon.
I am late to the discussion here and some of what I will say has been addressed by prior replies to this post, but I just can't resist adding my 2 cents (US), particularly since the moderator saw fit to award this post so richly. As background, I am a former Patent Examiner with 18 years in the PTO, although I no longer have anything to do with the IP field. The poster states: "Dickenson doesn't understand the difference between 'obvious' and 'prior art'. If there is prior art, it doesn't matter if it's obvious. Obvious is for the case where there is no prior art." This is totally WRONG; The statutory standard for obviousness is set forth in 35 USC 103, where the term "Prior Art" appears, the gist of which states: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. ... Perhaps ther poster simply didn't understand the use of terminology in patent law, but the implied notion that "obviousness" is done in a vacuum without reference to prior art is totally bogus; the Commissioner is quite correct in stating that obvious needs to be supported by prior art; By prior art it is not limited to a single piece of prior art that identially shows the claimed invention; that circumstance is called anticipation, whcih is covered in section 102 of the patent statute; If the invention is anticipated, it is also (but redundantly) obvious, for anticipation is the epitome of obviousness. (That comes from some court opinion I won't bother to waste time looking up); section 103 simply extends the prohibition of patenting an invention not exactly previously known to the case where it is an "obvious" variant. But, how much variation is needed to escape section 103? That's the money shot of the patent biz (Well, after the definition of proper subject matter under section 101, perhaps). That staute only gives some broad guidelines: On is to look at the differences between the claimed invention and the prior art (Which can be one or more individual pieces of prior art), and then evaluate what the prior art shows (or "teaches" as it is sometimes expressed), taking the view of one "skilled in the art" to which the invention pertains. As a practical matter, the art of the prior art references will generally be the same as the claimed invention; it then boils down to evaluating the significance of the differences. There is no hard and fast rule here, but it amounts to how significantly, in one or more functional aspects, the claimed invention "works" compared to the functionality exhibited by the prior art. So, what Dickenson said is, on its face, perfectly correct: If you think the invention is obvious, prove it, according to law, by providing the prior art AND arguing how that prior art applies against the claim. Now, in all this I am not stating that the searches and decisions on patents by the PTO are perfect, in any way; in fact, as I have indicated in my few past posts on patents, the PTO has serious management deficiencies in the way patents are examined, that have their roots back in the 1960's and have only gotten worse over the years to a deplorable state. But silly, uninformed attacks like this post that are so EASILY rebuttable do liitle to advance the debate on this subject. And the moderator who bumped this up to 5 (without a "funny" reason) needs to get a clue; the post was really not worth much more than a run of the mill AC 0.
Unfortunately, this will not improve soon. I keep in touch with a former colleague at the PTO and he tells me how truly sad thigs have become (He doesn't work on software patents). Over the last 30 years, PTO management has emphasised production and meeting timeliness deadlines over quality; after all, the former can be quantified, but quality can be subjective (you have to go to the heart of the matter to really evaluate quality vs. any dumb beanco^H^H^H^H^H^H^H^H^H^H^H manager probably has the mental ability to look at % of expectency, Number of amended applications over two months not acted on, etc. Years ago, the top managers claimed that their push to get more work out more quickly would be accompanied by an INCREASE in quality, yet, years later, a former high official was forced to retreat from this claim, stating that quality had not increased. Nevertheless, management pushed on, ratcheting up the requirement to increase production to even higher levels. The operative word" TAKE LESS TIME ON CASES. The managers then used another approach to "encourage" an allowance over a rejection. It was tracitional for examiners to use a shorthand in making rejections; the presuption was that everyone incvolved in the application process was technically skilled and could understand how The multiple references were being applied in an obviousness rejection (35 USC 103). This, of course, could be abused by the examiner in some cases, but generally had been satisfactorily used for decades. The Patent Bar, however raised a big stink over it, saying the quality of actions were not enough to legally establish a Prima Face case of Obviousness, which is required since the PTO has the burden to prove it ("A person shall be entitled to a patent unless..."). The net result was more, verbose office actions. With no real improvements in helping to meet this added burden (Well, after years of hand writing office actions on yellow legal pads to be submitted to a typing pool, Examiners FINALLY got NT PC's to work on; this did not exist in 1991 when I left the PTO) and with less and less time to allocate to searching and analyzing prior art there was a disincentive to really goint the level of detail required to meet this new requirement. The net of all these factors: Fewer rejections on substantive grounds, more allowances, an increasing number of them on the first action, fewer appeals, happy managers pointing out how much "work" had been accomplished, happier applicants geting broader claims then they used to, and happy examiner, at lest the ones who got awards and ouststanding ratings for high production, now renamed "Quality". My friend told me of a recent briefing by a high lever manager who had just returned from a conference at an industry group, who transmitted the message "We want our patents fast, so don't waste time with searching and beeing a bulldog on broad claims let the courts take care of the dirty details of patentablity" This mindset will only changed by appointment of a reformist Commissioner willing to clean house and lay down the law; the probability of this, give the current political climate, is unfortunately zero.
1. "The PTO is not yet equipped to handle general email correspondence. General inquiries should be directed by telephone to 800.786.9199 (800.PTO.9199) or 703.308.4357 (703.308.HELP), or in writing to one of the addresses specified in the PTO Directory ." 2. Congress (good luck, have plenty of $$$$$'s ready to hand out.)